The Interface Between District Court Litigation and Contested Office Proceedings under the AIA: Motions to Stay

What is the standard for deciding a motion to stay in view of a contested office proceeding?

Courts typically consider: (1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party; (2) whether a stay will simplify the issues at trial; and (3) the stage of the litigation, such as whether discovery is complete and whether a trial date has been set.

UNDUE PREJUDICE CONSIDERATIONS -

Are the new contested Office proceedings designed to be faster than prior reexaminations?

Yes. By statute, a final determination in a PGR, CBM or IPR proceeding must be issued not later than one year from the date of institution of the proceeding. That deadline may be extended up to six months for good cause and may be adjusted if multiple proceedings are joined together, but the Office has stated that extensions of the one-year period are anticipated to be rare. IPRex and XPRex, on the other hand, typically take about 36 months to get to a Board decision. The main reason for the difference in timing is that PGR, CBM and IPR proceedings are “adjudicative” proceedings - they start and finish at the Patent Trial and Appeal Board (“PTAB”). This eliminates the two-step process of prior reexaminations - first before the Central Reexamination Unit (“CRU”), then before the Board on appeal.

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